Li^yrary 

51 


Trade=Marks 


CONTENTS. 

Digest  of  United  States  Law  and  Practice. . 6 to  17 
Digest  of  Practice  in  Foreign  Countries. . . .18  to  32 

Piracy  of  Trade-Marks  Abroad 19, 31,  32 

Schedule  of  Charges — U.  S.  Registrations . . 3 

Schedule  of  Charges — Foreign  Registrations  26,27,28 


WILLIAM  E.  RICHARDS 

COUNSELLOR  AT  LAW 

277  Broadway  New  York,  N.  Y. 

Telephone  Worth  5255  Cable  Address  *‘Richatty  Newyork’ 


Copyright  1919  by  William  E.  Richards 


Oak  Street 
UNCLASSIFIED 


Trade-Marks 


CONTENTS. 

Digest  of  United  States  Law  and  Practice. . 6 to  17 
Digest  of  Practice  in  Foreign  Countries.  ...  18  to  32 

Piracy  of  Trade-Marks  Abroad 19,  31,  32 

Schedule  of  Charges — U.  S.  Registrations . . 3 


Schedule  of  Charges — Foreign  Registrations  26,27,28 


V 

WILLIAM  E.  RICHARDS 

COUNSELLOR  AT  LAW 

277  Broadway  New  York,  N.  Y. 

Telephone  Worth  5255  Cable  Address  “Richatty  New/ork” 


Copyright  1919  by  William  E.  Richards 


NOTICE. 


The  growing  and,  I may  say,  vital  importance  of  the  proper  pro- 
tection of  the  trade-marks  and  trade  names  of  American  manufacturers, 
especially  in  foreign  countries  owing  to  the  great  and  increasing  expansion 
of  the  foreign  trade  of  the  United  States,  has  induced  me  to  publish  this 
little  booklet  for  the  convenience  of  my  correspondents. 

This  work  is  not  intended  to  be  exhaustive  in  any  particular.  It  is 
rather  designed  to  serve  as  a convenient  handbook,  presenting  in  concise 
form  for  ready  reference  the  features  most  necessary  to  be  available  to 
lawyers  and  manufacturers  to  enable  them  to  readily  understand  the 
leading  points  of  the  law  and  practice  on  this  important  subject  matter, 
and  to  take  the  necessary  steps  to  secure  protection  for  this  class  of 
property. 

I am  always  glad  to  furnish  correspondents  with  more  complete  and 
precise  information  upon  any  specific  questions  either  of  law  or  practice, 
and  with  respect  to  any  country  or  countries. 

William  E.  Richards. 


New  York,  March  i,  1919. 


SCHEDULE  OF  CHARGES. 
United  States  Trade-Marks. 


All  charges  are  payable  in  advance,  cash  with  order,  unless  otherwise 
agreed  upon. 

The  charges  include  preparation  and  filing  of  necessary  papers,  pay- 
ment of  government  fees,  and  prosecution  of  applications  in  ordinary 
cases,  hut  do  not  include  special  services  in  appeals,  or  contested  cases 
such  as  oppositions,  interferences  or  cancellations,  the  charges  for  which 
cannot  be  determined  in  advance,  but  which  will  be  fair  and  reasonable 
for  the  services  rendered. 

Copies  of  the  trade-mark  are  to  be  supplied  to  us. 


Searches  of  prior  registrations 

Application  for  Registration: 

One  mark,  in  single  class from 

Each  additional  class,  for  same  mark “ 

Each  additional  mark,  in  same  class “ 

Application  for  Renezvals,  each  mark “ 

Assignments: 

Preparing  and  recording,  for  300  words  or  under “ 

Preparing  and  recording,  over  300  and  under  1,000 

words  “ 

Preparing  and  recording,  if  over  1,000  words “ 

Appeals  from  decisions  examiner  of  trade-marks “ 

Appeals  from  decisions  examiner  of  trade-marks from 

“ From  decisions  examiner  of  interferences “ 

“ Pro  forma,  to  Commissioner “ 

“ To  Commissioner  of  Patents “ 

“ To  Court  of  Appeals  of  District  of  Columbia “ 


$7-50 

$35-00 

35.00 

35-00 

25.00 

5.00 

7.50 

12.50 

50.00 
50.00 

50.00 

25.00 

75.00 
100.00 


Oppositions, 

Interferences, 

Cancellations. 


As  these  involve  more  or  less  protracted  proceedings 
before  the  examiner  of  interferences,  charges  cannot  be 
named  in  advance  but  will  be  subject  tO'  agreement  in 
each  case. 


3 


SELECTION  OF  TRADE-MARKS. 

Believing  that  a few  suggestions  upon  this  point  may  be  appreciated, 
1 ofifer  the  following  ideas. 

First:  It  will  be  obvious  that  the  most  desirable  and  effective  marks 
are  those  that  are,  (a)  simple  in  design  ; (b)  easy  to  understand  and  re- 
member; (c)  attractive  in  appearance;  and,  (d)  if  the  mark  is  an  arbi- 
trary word,  easy  to  speak,  spell,  and  attractive  in  sound. 

Second:  It  must  always  be  remembered  that  marks  that  are  descrip- 
tive, or  relate  to  the  character  or  quality  of  the  goods,  or  that  are  descrip- 
tive of  the  container  or  package,  as  well  as  geographical  names,  except 
when  the  latter  are  used  in  a fanciful  or  arbitrary  sense,  are  unregisterable. 

The  misspelling  of  an  unregisterable  word,  or  its  arrangement  in  a 
fanciful  design,  does  not  relieve  it  from  objection  if  it  conveys  infor- 
mation of  a descriptive  character. 

A trade-mark  will  not  be  registered  if  it  resembles  a known  mark 
already  in  use  by  another  for  goods  of  the  same  descriptive  qualities,  or 
so  closely  resembles  such  a mark  as  to  be  likely  to  cause  confusion. 
Deceptive  or  misleading  marks  are  unregisterable. 

A trade-mark  cannot  be  a color,  a shape,  a package  or  a container, 
and  descriptive  words  and  terms  taken  from  a foreign  language  are  un- 
registerable. 

Third:  The  following  are  types  of  trade-marks  that  are  proper  sub- 
jects of  registration. 

Arbitrary  numbers,  letters,  or  symbols,  or  combination  thereof  with 
a word  or  words,  when  not  descriptive,  or  trade  terms  relating  to  the 
articles  with  which  they  are  used. 

A word  or  words  used  in  a fancy  (non-descriptive)  sense,  such  as 
^‘Onyx”  for  hosiery,  or  “Velvet”  for  tobacco,  and  coined  words  or  phrases, 
such  as  “Kodak”  for  cameras,  “Socony”  for  oil  products,  and  suggestive 
words,  if  not  descriptive,  are  very  desirable  marks. 

Pictorial  marks  are  ordinarily  registerable,  and  are  frequently  valu- 
able, as  for  example  the  domino  of  the  Crystal  DominO'  Sugar,  the 
•chocolate  girl  of  Baker’s  Chocolate,  and  many  others.  Such  marks  are 
often  very  suggestive  without  being  descriptive. 

Personal  names  are  registerable  when  they  are  written,  printed,  or 
stamped  in  such  a way  that  the  peculiarities  of  the  writing,  printing  or 
design  constitute  the  most  particular  feature  of  the  mark.  Autographic 
signatures,  either  with  or  without  a portrait  of  the  individual  are  register- 
able  if  so  individualized.  Names  of  historical  persons  or  mythological 
characters  may  be  registered,  but  the  name  of  a living  person  cannot  be 
used  without  consent. 

Portraits  of  living  persons  may  be  used  by  consent,  and  portraits  of 
historical  persons  are  frequently  used. 

Fourth:  Lastly,  a trade-mark  is  not  registerable  if  its  registration 
would  be  against  public  policy,  or  if  its  subject  matter  is  scandalous  or 
immoral,  or  if  it  is  applied  to  articles  harmful  in  themselves. 


4 


TRADE-MARKS  IN  THE  UNITED  STATES. 
Methods  of  Protection. 

Common  Law  and  State  Laws. 

The  right  to  the  exclusive  use  of  and  property  in  trade-marks  has 
always  been  recognized  under  the  common  law  in  the  chancery  courts. 
Many  of  the  States  have  also  enacted  special  Statutes  for  the  protectioa 
of  such  property. 

The  right  to,  and  property  in  a mark,  commences  with  the  adoption 
and  use  of  the  mark  in  question,  provided  the  party  adopting  it  is  the  first 
to  make  use  of  it  for  the  particular  class  of  goods  to  which  he  has 
applied  it. 

Some  well-known  attorneys  advise  their  clients  to  depend  upon  the 
above  form  of  protection,  upon  the  ground  that  registration  of  the  mark 
might  have  a limiting  effect  in  connection  with  proceedings  instituted 
under  the  State  statutes,  or  under  the  common  law,  for  infringement  of 
the  owner’s  rights;  that  registration  is  only  of  importance  as  giving  a 
statutory  right  to  bring  suit  for  infringement,  and  that  the  use  of  the 
mark  at  a date  earlier  than  that  set  up  by  another  would  have  to  be 
established  before  success  in  a suit  could  be  insured. 

I am  not  in  favor  of  the  above  practice.  In  my  opinion  the  ad- 
vantages of  registration  are  pronounced  and  important  for  the  reasons,, 
amongst  others,  stated  in  the  next  paragraph. 

By  Registration. 

Registration  of  trade-marks  may  be  effected  in  the  United  States 
Patent  Office  under  the  Act  of  February  20,  1905,  as  amended  by  the 
Acts  of  May  4,  1906,  March  2,  1907,  February  18,  1909,  and  Act  of 
February  15,  1911. 

The  effect  of  registration  under  these  laws  affords  the  following 
benefits : 

(a)  Establishes  prima  facie  evidence  of  ownership. 

(b)  Establishes  the  right  to  bring  suit  for  infringement  in  the 
United  States  Courts,  regardless  of  the  question  of  residence. 

(r)  Enables  the  owner  to  effect  registration  in  foreign  countries 
where  proof  of  registration  in  the  owner’s  home  country  is  a prerequisite. 

(d)  Enables  the  owner  to  prevent  the  admission  intO'  the  United 
States  of  foreign  manufactured  articles  of  the  same  class  bearing' the 
same  or  similar  marks. 

(e)  Where  a prior  application  for  registration  has  been  regularly 
filed  in  a foreign  country,  which  by  treaty,  convention  or  law  affords 
similar  protection  to  citizens  of  the  United  States,  an  application  in  this 

5 


country,  if  filed  within  four  months  from  the  date  of  such  foreign  appli- 
cation, is  accorded  the  same  force  and  effect  as  if  filed  on  the  date  of  said 
foreign  application. 

DIGEST  OF  LAW  AND  PRACTICE. 

What  May  be  Registered. 

Any  mark  by  which  the  goods  of  the  owner  of  the  mark  may  be  dis- 
tinguished from  other  goods  of  the  same  class,  which  is  used  in  commerce 
with  foreign  nations  or  among  the  several  States  or  with  Indian  tribes, 
subject,  however,  to  the  limitations  set  forth  in  the  next  paragraph. 

What  May  Not  be  Registered. 

The  following  marks  are  not  registerable : 

(a)  Those  which  consist  of  or  which  comprise  immoral  or  scan- 
dalous matter. 

{h)  Those  which  consist  of  or  comprise  the  flag  or  coat  of  arms  or 
other  insignia  of  the  United  States,  or  any  simulation  thereof,  or  of  any 
State  or  municipality,  or  of  any  foreign  nation,  or  of  any  design  or  picture 
that  has  been  or  may  hereafter  be  adopted  by  any  fraternal  society  as 
its  emblem,  unless  it  is  shown  to  the  satisfaction  of  the  Commissioner  that 
the  mark  was  adopted  and  used  as  a trade-mark  by  the  applicant  or  ap- 
plicant’s predecessors,  from  whom  title  is  derived,  prior  to  the  date  of 
its  adoption  by  such  fraternal  society  as  its  emblem.  By  Act  of  Jan.  5, 
1905,  the  sign  of  the  Red  Cross  of  America  is  prohibited  from  use  for 
advertising  or  trade  purposes. 

(c)  Marks  which  are  identical  with  a registered  or  known  trade- 
mark owned  and  in  use  by  another  for  merchandise  of  the  same  descrip- 
tive properties,  or  which  so  nearly  resemble  such  a trade-mark  as  to  be 
likely  to  cause  confusion  or  mistake  in  the  mind  of  the  public,  or  to 
deceive  purchasers. 

{d)  Marks  which  consist  merely  in  the  name  of  an  individual,  firm, 
corporation,  or  association,  not  written,  printed,  impressed,  or  woven  in 
some  particular  or  distinctive  manner,  or  in  association  with  a portrait  of 
the  individual,  but  this  does  not  prevent  the  registration  of  a trade-mark 
otherwise  registerable  because  of  its  being  the  name  of  the  applicant  or 
a portion  thereof. 

{e)  Mere  words  or  devices  which  are  descriptive  of  the  goods  with 
which  they  are  used,  or  of  the  character  or  quality  of  such  goods,  or 
merely  a geographical  name  or  term. 

if)  No  portrait  of  a living  individual  may  be  registered  as  a trade- 
mark except  by  the  consent  of  such  individual  evidenced  by  an  instrument 
in  writing. 


6 


(g)  No  trade-mark  will  he  registered  which  is  used  in  unlawful 
business,  or  upon  any  article  injurious  in  itself,  or  which  has  been  used 
with  the  design  of  deceiving  the  public  in  the  purchase  of  merchandise, 
or  which  has  been  abandoned. 

Registrations  Under  Ten-iYear  Rule. 

Nothing  in  the  preceding  paragraph  will  prevent  the  registration  of 
any  mark  used  by  the  applicant  or  his  predecessors,  or  by  those  from 
whom  title  to  the  mark  is  derived,  in  commerce  with  foreign  nations  or 
among  the  several  States  or  with  Indian  tribes,  which  was  in  actual  and 
exclusive  use  as  a trade-mark  of  the  applicant,  or  his  predecessors  from 
whom  he  derived  title,  for  ten  years  next  preceding  February  20th,  1905. 

Who  May  Effect  Registration. 

Any  owner  of  a trade-mark  used  in  commerce  with  foreign  nations, 
or  among  the  several  States,  or  with  Indian  tribes,  provided : 

(a)  Such  owner  is  domiciled  within  the  territory  of  the  United 
States ; or, 

(b)  Resides  in  or  is  located  in  any  foreign  country  which,  by  treaty, 
convention,  or  law,  affords  similar  privileges  to  the  citizens  of  the  United 
States;  but  in  such  case  the  applicant  must  have  registered  the  mark  in 
the  foreign  country  in  which  he  resides  or  is  located,  and  file  a certified 
copy  of  the  certificate  of  such  registration  in  the  Patent  Office. 

(c)  Any  owner  who  though  domiciled  in  a foreign  country  has  a 
manufacturing  establishment  within  the  territory  of  the  United  States, 
may  register  marks  used  on  the  products  of  such  establishment. 

The  word  “owner”  applies  to  and  includes  firms,  corporations,  and 
associations,  as  well  as  a natural  person. 

SEARCHES  AS  TO  NOVELTY. 

In  order  to  ascertain  whether  any  certain  trade-mark  has  already 
been  appropriated  and  registered  for  a specified  class  of  goods,  it  is  usual 
and  advisable,  to  make  a search  covering  the  registered  marks  in  such 
class.  This  may  be  quickly  done,  only  a few  days^  time  being  required, 
and  the  cost  is  moderate.  (See  Schedule  of  Charges,  page  3.) 

APPLICATION  FOR  REGISTRATION. 

Documents  Required. 

A complete  application  for  the  registration  of  a trade-mark  comprises 
the  following  parts : 

(a)  Petition,  signed  by  the  applicant.  A power  of  attorney,  if  an 
attorney  is  appointed,  should  be  included  in  this  document. 


7 


(b)  Statement,  signed  by  the  applicant.  This  must  specify  the 
name,  domicile,  location,  and  citizenship  of  the  party  applying,  and  if  the 
applicant  be  a corporation,  or  association,  the  State  or  nation  under  the 
laws  of  which  organized;  the  class  of  merchandise,  and  the  particular 
description  of  the  goods  comprised  in  such  class  upon  which  the  trade- 
mark has  actually  been  used ; a statement  of  the  manner  in  which  the  same 
is  applied  and  affixed  to  the  goods,  and  the  length  of  time  it  has  been  used 
upon  such  goods.  A description  of  the  mark  itself  shall  be  included  if 
required  by  the  Commissioner,  or  if  desired  by  the  applicant,  but  in  the 
latter  case  it  must  be  of  a character  to  meet  the  approval  of  the  Com- 
missioner. 

(c)  Declaration,  signed  by  the  applicant,  under  oath,  before  any 
person  within  the  United  States  authorized  by  law  to  administer  oaths, 
or,  in  a foreign  country,  before  any  minister,  charge  d’affaires,  consul,  or 
commercial  agent  holding  commission  under  the  Government  of  the 
United  States,  or  before  any  notary  public,  judge,  or  magistrate  having 
an  official  seal  and  authorized  to  administer  oaths  in  the  foreign  country 
in  which  the  applicant  may  be,  whose  authority  shall  be  proved  by  the 
certificate  of  a diplomatic  or  consular  officer  of  the  United  States,  the 
declaration  being  attested  in  all  cases  by  the  proper  official  seal  of  the 
officer  before  whom  the  same  is  made.  When  the  person  before  whom 
the  declaration  is  made  is  not  provided  with  a seal,  his  official  character 
must  be  established  by  competent  evidence,  as  by  a certificate  of  a clerk 
of  a court  of  record,  or  other  proper  officer  having  a seal. 

{d)  Drawing  of  the  trade-mark  on  bristol  board,  substantially  the 
same  requirements  and  rules  as  for  patents. 

{e)  Five  specimens  (or  facsimiles,  when,  from  the  mode  of  apply- 
ing or  affixing  to  the  goods,  specimens  cannot  be  furnished)  of  the  trade- 
mark as  actually  used  upon  the  goods.  A few  extra  copies  should  be 
added  for  the  attorney’s  use. 

(/)  The  government  fee  of  ten  dollars. 

Applicants  in  Foreign  Countries. 

{g)  If  the  applicant  resides  or  is  located  in  a foreign  country  he 
must,  unless  the  application  relates  to  a trade-mark  used  upon  goods 
made  in  a manufacturing  establishment  within  the  United  States,  set  forth 
that  the  trade-mark  has  been  registered  by  him,  or  that  an  application  for 
registration  thereof  has  been  filed  by  him  in  the  foreign  country  in  which 
he  resides  or  is  located,  and  give  the  date  of  such  registration  or  applica- 
tion. A certified  copy  of  the  certificate  of  such  registration  must  be  filed 
before  the  certificate  of  registration  in  this  country  will  be  issued. 

{h)  If  the  applicant  resides  or  is  located  in  a foreign  country  he 
must,  before  the  issuance  of  the  certificate  of  registration,  file  a notice  in 
writing  designating  some  person  residing  within  the  United  States  on 

8 


whom  process  or  notice  of  ])rocee(linj^s  affecting  the  right  of  ownership 
of  the  trade-mark  may  be  served  with  the  same  force  and  effect  as  if 
served  upon  the  applicant  or  registrant  in  person. 

PROCEDURE  IN  PATENT  OFFICE. 

Examination. 

Applications  are  examined  as  to  form  and  merits.  When  the  ex- 
aminer of  trade-marks  finds  reasons  for  objections  or  refusal  of  registra- 
tion the  applicant  is  notified,  the  reasons  for  objection  or  refusal  stated, 
and  such  information  and  references  given  as  may  be  useful  in  the  fur- 
ther prosecution,  if  any. 

If  it  appear  that  registration  is  proper  the  mark  will  be  published  in 
the  Official  Gazette  at  least  thirty  days  prior  to  the  date  of  registration  to 
permit  of  opposition  being  filed  by  parties  believing  they  would  be 
damaged  by  such  registration.  If  no  notice  of  opposition  is  filed  within 
thirty  days’  time,  notice  of  the  allowance  of  the  application  is  given,  and 
a certificate  of  registration  will  be  issued  and  bear  date  as  of  the  fourth 
Tuesday  following  the  first  Thursday  thereafter. 

Amendments. 

The  statement  may  be  amended  to  correct  informalities,  or  to  avoid 
objections  made,  or  for  other  reasons  arising  in  the  course  of  examination, 
but  no  amendments  may  be  made  to  the  description  or  drawing  unless 
warranted  by  something  in  the  specimens  or  facsimiles  originally  filed. 
A declaration  cannot  be  amended.  If  necessary,  a substitute  declaration 
may  be  filed. 

Amendments  may  be  made  after  allowance  of  an  application,  if  the 
case  has  not  been  printed,  on  the  recommendation  of  the  examiner,  ap- 
proved by  the  Commissioner,  without  withdrawing  the  case  from  issue. 

Oppositions. 

Any  person  who  believes  he  would  be  damaged  by  the  registration  of 
a mark  may  oppose  the  same  by  filing  a written  notice  of  opposition,  ac- 
companied by  the  fee  of  ten  dollars,  stating  the  grounds  therefor,  within 
thirty  days  after  the  publication  in  the  Official  Gazette  of  such  mark. 
This  notice  of  opposition  must  be  verified  by  the  person  filing  the  same 
before  one  of  the  officers  designated  to  take  declarations.  (See  Docu- 
ments Required,  above.) 

An  opposition  may  be  filed  by  a duly  authorized  attorney,  but  must  be 
duly  verified  by  the  opposer,  within  a reasonable  time  after  such  filing, 
or  it  will  be  null  and  void. 

In  case  of  opposition  the  examiner  of  interferences  takes  charge  of 
the  case  and  gives  notice  to  the  applicant  or  registrant,  who  must  make 

9 


answer  at  such  time,  not  less  than  thirty  days  from  the  date  of  the  notice, 
as  shall  be  fixed  by  the  examiner.  The  practice  in  opposition  cases  fol- 
lows, as  nearly  as  possible,  the  practice  in  interference  proceedings. 

Interferences. 

An  interference  will  be  declared  whenever  an  application  is  made  for 
the  registration  of  a trade-mark  which  is  substantially  identical  with  a 
mark  appropriated  to  goods  of  the  same  descriptive  properties  for  which 
a certificate  of  registration  has  been  issued  to  another,  or  for  which  ap- 
plication for  registration  has  been  previously  made  by  another,  or  which 
so  nearly  resembles  such  trade-mark,  or  a known  trade-mark  owned  and 
used  by  another,  as,  in  the  opinion  of  the  Commissioner,  is  likely  to  be 
mistaken  therefor  by  the  public. 

All  preliminary  questions  must  have  been  settled  before  such  declara- 
tion, the  mark  must  have  been  decided  to  be  registerable,  and  it  must  have 
been  published  at  least  once  in  the  Official  Gazette. 

The  practice  follows,  as  nearly  as  practicable,  the  practice  in  inter- 
ferences in  patent  matters. 

If  two  or  more  applicants  claim  substantially  the  same  registerable 
mark,  and  the  application  of  one  of  them  is  ready  for  publication,  the 
examiner  may  require  the  other  applicants  to  put  their  applications  in 
condition  for  publication  within  a specified  time  in  order  that  an  inter- 
ference may  be  declared,  and  if  any  party  fail  to  do  so,  the  declaration 
of  interference  will  not  be  delayed,  but  the  application  of  such  party  will 
be  held  for  revision  and  restriction  after  final  judgment,  subject  to  other 
interferences. 

The  examiner  of  interferences  may,  either  before  or  in  his  final 
decision,  direct  the  attention  of  the  Commissioner  to  any  matter  which 
cannot  be  acted  upon  by  him,  which  in  his  opinion  precludes  a proper 
determination  of  questions  raised  by  the  proceedings,  or  amounts  to  a 
statutory  bar  to  the  registration  of  the  mark.  In  such  case  the  Commis- 
sioner may,  before  judgment,  suspend  the  interference  or  opposition  and 
remand  the  case  to  the  examiner  of  trade-marks  for  his  consideration  of 
such  matters.  If  the  case  be  not  so  remanded,  the  examiner  of  trade- 
marks will,  after  judgment,  consider  any  matter  affecting  right  to  regis- 
tration which  may  have  been  brought  to  his  attention,  unless  the  same 
shall  have  been  previously  disposed  of  in  the  proceeding. 

Motions  may  be  made  to  dissolve  an  interference  upon  the  ground 
that,  (a)  no  interference  in  fact  exists;  (b)  that  there  has  been  such  ir- 
regularity in  declaring  the  same  as  will  preclude  a proper  determination 
of  the  question  of  the  right  of  registration;  (c)  or  denying  the  register- 
ability  of  an  applicant’s  mark. 


10 


Such  motions,  and  all  motions  of  a similar  character,  should  be  made, 
if  possible,  not  later  than  the  thirtieth  day  after  the  notices  of  the  declara- 
tion of  interference  have  been  mailed,  and  should  be  accompanied  by  a 
motion  to  transmit  the  same  to  the  examiner  of  trade-marks.  The  ex- 
aminer of  interferences  will  thereupon  notice  the  latter  for  hearing  upon 
a day  certain. 

When  in  proper  form  the  motion  to  dissolve  will  be  transmitted  for 
determination  to  the  examiner  of  trade-marks,  who  will  fix  a day  certain 
for  the  hearing  of  the  motion  upon  the  merits,  and  give  notice  thereof 
to  all  the  parties. 

If  a stay  of  proceedings  is  desired,  a motion  therefor  should  accom- 
pany the  motion  for  transmission. 

Motions  to  shift  the  burden  of  proof  should  be  made  before  the 
examiner  of  interferences  for  his  determination,  from  whose  decision 
thereon  there  is  no  appeal,  though  the  matter  may  be  reviewed  on  appeal 
from  the  final  decision  upon  the  question  of  priority. 

The  decision  of  the  examiner  of  trade-marks,  upon  a motion  for 
dissolution,  is  binding  upon  the  examiner  of  interferences  unless  reversed 
or  modified  upon  appeal. 

All  preliminary  questions  having  been  settled,  terms  are  fixed  by  the 
examiner  within  which  testimony  may  be  taken  by  all  the  parties,  and,  the 
testimony  having  been  duly  filed,  determination  is  made  as  to  the  facts  as 
to  the  adoption  and  use,  and  the  rights  of  the  several  parties,  the  first  to 
adopt  and  use  the  mark  being  entitled  to  registration  thereof. 

Cancellations. 

Any  person,  deeming  himself  to  be  injured  by  the  registration  of  a 
trade-mark,  may,  at  any  time,  make  application  for  the  cancellation  of 
such  registration.  The  application  must  state  the  grounds  for  cancel- 
lation, and  is  required  to  be  filed  in  duplicate,  and  must  be  verified  by  the 
applicant  before  one  of  the  officers  named  under  “Declaration”  on  page  8. 

The  examiner  of  interferences  will  then  give  notice  thereof  to  the 
registrant  of  the  mark,  who  must  make  answer  at  such  time,  not  less  than 
thirty  days  from  the  date  of  the  notice,  as  shall  be  fixed  by  the  examiner. 

The  proceedings  follow,  as  nearly  as  practicable,  the  practice  in 
interferences  in  patent  matters. 

If  it  appears,  after  a hearing,  that  (a)  the  registrant  was  not  entitled 
to  the  use  of  the  mark  at  the  date  of  his  application  for  registration  there- 
of, or,  (b)  that  the  mark  is  not  used  by  the  registrant,  or,  (c)  that  it  has 
been  abandoned,  and  the  examiner  of  interferences  so  decides,  the  Com- 
missioner will  cancel  the  registration  of  the  mark,  unless  appeal  be  taken 
from  such  decision  within  the  time  limit  fixed. 

(See  also  “Interfering  Registered  Trade-Marks,”  page  14.) 

11 


\l  OF  il  L LIB. 


Appeals. 

An  appeal  may  be  taken  to  the  Commissioner  by  petition  upon  any 
proper  question  which  has  been  acted  upon  by  the  examiner  of  trade- 
marks, not  involving  the  merits  of  the  mark  claimed,  the  refusal  of  regis- 
tration thereof,  or  a requirement  for  division,  without  payment  of  a gov- 
ernment fee.  A time  will  be  fixed  for  hearing  such  petition,  and  the  ex- 
aminer required  to  furnish  a written  statement  of  the  grounds  of  his 
decision  upon  the  matters  averred  in  such  petition,  and  furnish  a copy 
thereof  to  the  petitioner,  within  five  days  after  being  notified  of  the  order 
fixing  the  day  of  hearing. 

From  an  adverse  decision  of  the  examiner  of  trade-marks  upon  an 
applicant’s  right  to  register  a trade-mark,  or  to  renew  a registration,  or 
from  a decision  of  the  examiner  of  interferences,  an  appeal  may  be  taken 
to  the  Commissioner  upon  payment  of  a fee. 

From  an  adverse  decision  of  the  Commissioner  in  the  cases  named 
in  the  last  paragraph  only,  an  appeal  may  be  taken  to  the  Court  of  Ap- 
peals of  the  District  of  Columbia  in  the  manner  prescribed  by  the  rules 
of  that  court. 

Date  and  Duration  of  Registration. 

Certificates  of  registration  for  registerable  trade-marks  are  issued 
after  allowance  and  publication  of  the  mark  in  the  Official  Gazette.  The 
weekly  issue  closes  on  Thursday,  and  certificates  of  registration  of  that 
issue  bear  date  as  of  the  fourth  Tuesday  thereafter. 

A certificate  of  registration  remains  in  force  for  twenty  years  from 
its  date  unless  the  trade-mark  has  been  previously  registered  in  a foreign 
country,  in  which  case  such  certificate  ceases  to  be  in  force  on  the  day  on 
which  the  mark  ceases  to  be  protected  in  such  foreign  country,  and  in  no 
case  remains  in  force  more  than  twenty  years  unless  renewed. 

Old  Registrations. 

Certificates  of  registration  in  force  on  the  first  day  of  April,  1905, 
will  remain  in  force  for  the  periods  for  which  they  were  issued,  and  are 
renewable  under  the  provisions,  conditions,  and  for  the  periods  of  time, 
prescribed  by  the  present  law. 


Renewal  of  Registration. 

A certificate  of  registration  may  be  renewed  from  time  to  time  for 
like  periods,  upon  application  by  the  registrant,  his  legal  representatives, 
or  transferees  of  record  in  the  Patent  Office,  and  upon  payment  of  new 
fees.  Such  application  may  be  made  at  any  time  not  more  than  six  months 
prior  to  the  expiration  of  the  period  for  which  the  certificate  of  registra- 
tion was  issued  or  renewed. 


12 


Assignments. 

Every  registered  trade-mark,  and  every  mark  for  the  registration  of 
which  application  has  been  made,  together  with  the  application  for  regis- 
tration thereof,  is  assignable  in  connection  with  the  good-will  of  the  busi- 
ness in  which  the  mark  is  used.  Such  assignment  must  be  in  writing,  and 
duly  acknowledged  according  to  the  laws  of  the  country  or  State  in  which 
the  same  is  executed. 

An  assignment  is  void  as  against  any  subsequent  purchaser  for  a 
valuable  consideration,  without  notice,  unless  it  is  recorded  in  the  Patent 
Office  within  three  months  from  its  date. 

A certificate  of  registration  may  be  issued  to*  the  assignee  of  an  appli- 
cant, provided  the  assignment  is  of  record  in  the  Patent  Office. 

Infringements. 

The  registration  of  the  trade-mark  is  prima  facie  evidence  of  owner- 
ship. Any  person  who  shall,  without  the  consent  of  the  owner  thereof, 
reproduce,  counterfeit,  copy,  or  colorably  imitate  any  such  trade-mark  and 
affix  the  same  to  merchandise  of  substantially  the  same  descriptive  prop- 
erties as  those  set  forth  in  the  registration,  or  to  labels,  signs,  prints, 
packages,  wrappers,  or  receptacles  intended  to  be  used  upon  or  in  connec- 
tion with  the  sale  of  such  merchandise,  and  shall  use,  or  have  used,  such 
reproduction,  counterfeit,  copy,  or  colorable  imitation  in  commerce  among 
the  several  States,  or  with  a foreign  nation,  or  with  the  Indian  tribes, 
shall  be  liable  to  an  action  for  damages  therefor  at  the  suit  of  the  owner 
thereof. 

Exemplary  Damages. 

The  court  may  enter  judgment  in  any  such  action,  in  which  a verdict 
is  rendered  for  the  plaintiff,  for  any  sum  above  the  amount  found  by  the 
verdict  as  the  actual  damages,  according  to  the  circumstances  of  the  case, 
not  exceeding  three  times  the  amount  of  such  verdict,  together  with  the 
costs. 

Jurisdiction  of  Courts. 

The  circuit  and  territorial  courts  of  the  United  States  and  the  Su- 
preme Court  of  the  District  of  Columbia  have  original  jurisdiction,  and 
the  circuit  courts  of  appeals  of  the  United  States  and  the  Court  of  Ap- 
peals of  the  District  of  Columbia  have  appellate  jurisdiction  of  all  suits 
at  law  or  in  equity  respecting  registered  trade-marks,  without  regard  to 
the  amount  in  controversy. 

Writs  of  certiorari  may  be  granted  by  the  Supreme  Court  of  the 
United  States  for  the  review  of  cases  in  the  same  manner  as  provided  for 
patent  cases. 


13 


Injunctions. 

The  several  courts  vested  with  jurisdiction  have  power  to  grant  in- 
junctions, to  prevent  the  violation  of  any  right  of  the  owner  of  a regis- 
tered trade-mark,  on  such  terms  as  the  court  may  deem  reasonable,  and 
may  enforce  the  same  by  proceedings  to  punish  for  contempt,  or  other- 
wise. 

Accounting  for  Profits — Damages. 

Upon  a decree  being  rendered  in  any  such  case  for  wrongful  use  of  a 
trade-mark  the  complainant  is  entitled  to  recover,  in  addition  to  the  profits 
to  be  accounted  for  by  the  defendant,  the  damages  the  complainant  has 
sustained  thereby,  and  the  court  will  assess  the  same  or  cause  the  same 
to  be  assessed  under  its  direction.  The  court  may  also  increase  such 
damages,  in  its  discretion,  as  stated  under  “Exemplary  Damages.” 

In  assessing  profits  the  plaintiff  is  only  required  to  prove  defendant’s 
sales  only;  the  defendant  must  prove  all  elements  of  cost  necessary. 

Seizure  of  Counterfeits. 

In  any  case  involving  the  right  to  a registered  trade-mark,  in  which 
the  verdict  has  been  found  for  the  plaintiff,  or  an  injunction  issued,  the 
court  may  order  that  all  labels,  signs,  prints,  packages,  wrappers,  or  re- 
ceptacles in  the  possession  of  the  defendant,  bearing  the  trade-mark  of 
the  plaintiff  or  complainant,  or  any  reproduction,  counterfeit,  copy,  or 
colorable  imitation  thereof,  be  delivered  up  and  destroyed. 

Exceptions. 

No  action  or  suit  can  be  maintained  under  the  provisions  of  the 
trade-mark  laws  in  any  case  where  the  mark  is  used  in  unlawful  business, 
or  Upon  any  article  injurious  in  itself,  or  where  the  mark  has  been  used 
with  the  design  of  deceiving  the  public  in  the  purchase  of  merchandise, 
or  has  been  abandoned,  or  upon  any  certificate  of  registration  fraudulently 
obtained. 

Fraudulent  Registrations. 

Any  person  who  procures  registration  of  a trade-mark,  or  entry 
thereof,  by  a false  or  fraudulent  declaration  or  representation,  oral  or  in 
writing,  or  by  any  false  means,  is  liable  to  pay  any  damages  sustained  in 
consequence  thereof  to  the  injured  party,  tO'  be  recovered  by  an  action 
on  the  case. 

Interfering  Registered  Trade-Marks. 

Whenever  there  are  interfering  registered  trade-marks,  any  person 
interested  in  any  one  of  them  may  have  relief  against  the  interfering 

14 


registrant,  and  all  persons  interested  under  him,  by  suit  in  equity  in  the 
United  States  courts.  The  court,  on  notice  to  adverse  parties,  and  other 
due  proceedings  had  according  to  the  course  of  equity,  may  adjudge  and 
declare  either  of  the  registrations  void  in  whole  or  in  part  according  to 
the  interest  of  the  parties  in  the  trade-mark,  and  may  order  the  certificate 
of  registration  to  be  delivered  up  to  the  Commissioner  of  Patents  for 
cancellation. 

Counterfeited  Marks  or  Names — Prohibition  of  Entry. 

No  article  of  imported  merchandise  which  shall  copy  or  simulate  the 
name  of  any  domestic  manufacture,  or  manufacturer  or  trader,  or  of  any 
manufacturer  or  trader  located  in  any  foreign  country  which,  by 
treaty,  convention  or  law  affords  similar  protection  to  citizens  of  the 
United  States,  or  which  shall  copy  or  simulate  a duly  registered  trade- 
mark, or  bear  a name  or  mark  calculated  to  induce  the  public  to  believe 
that  the  article  is  manufactured  in  the  United  States,  or  that  it  is  manu- 
factured in  any  foreign  country  or  locality  other  than  in  the  country  or 
locality  where  it  is  in  fact  manufactured,  will  be  admitted  to  entry  at  any 
customs-house  of  the  United  States. 

The  act  does  not  affect  names  or  trade-marks  previously  recorded  in 
the  Treasury  Department,  and  as  to  them  the  protection  granted  so  far  as 
concerns  prohibition  of  importation  continues. 

The  act  does  not  appear  to  make  it  compulsory  for  manufacturers 
or  traders  to  register  names  (not  trade-marks)  in  the  Patent  Office,  in 
order  to  prevent  illegal  importations,  but  they  are  required  to  obtain  due 
registration  of  their  trade-marks,  before  the  Treasury  Department  can  act 
with  respect  thereto. 

In  order  to  aid  the  officers  of  the  customs  in  enforcing  this  pro- 
hibition, the  manufacturer  or  trader  should  make  application  to  the 
Treasury  Department,  stating  the  name  of  the  owner,  his  residence,  and 
the  locality  in  which  his  goods  are  manufactured,  and  in  case  of  trade- 
marks a certified  copy  of  the  certificate  of  registration  must  be  filed,  and 
the  names  of  the  ports  to  which  facsimiles  should  be  sent  should  be 
given.  A sufficient  number  of  facsimiles  should  accompany  the  applica- 
tion to  provide  one  copy  for  each  port  named  with  ten  additional  copies 
for  the  files  of  the  department. 

In  case  of  the  name  of  a domestic  manufacture,  manufacturer  or 
trader  (not  trade-mark),  proper  proof  of  ownership,  and  of  the  country 
or  locality  in  which  the  goods  are  manufactured  must  be  filed,  which 
must  consist  of  the  affidavit  of  the  owner  or  one  of  the  owners,  certified 
by  an  officer  entitled  to  administer  oaths  and  having  a seal.  (See 
‘‘Declarations,”  page  8.) 


15 


Marking  Required. 

Registrants  of  trade-marks  must  give  notice  to  the  public  of  such 
registration,  either  by  affixing  to  the  mark  the  words  “Registered  in  U.  S. 
Patent  Office,”  or  “Reg.  U.  S.  Pat.  Off.,”  or  when,  from  the  character  or 
size  of  the  trade-mark,  or  from  its  manner  of  attachment  to  the  article  to 
which  it  is  appropriated,  this  cannot  be  done,  then  by  affixing  a label  con- 
taining a like  notice  to  the  package  or  receptacle  wherein  the  article  or 
articles  are  inclosed. 

In  any  suit  for  infringement  by  a party  failing  to  give  notice  as 
above,  no  damages  shall  be  recovered,  except  on  proof  that  the  defendant 
was  duly  notified  of  infringement,  and  continued  the  same  after  such 
notice. 


CLASSIFICATION  OF  MERCHANDISE. 

Below  I give  the  official  classification  of  merchandise  for  the  purposes 
of  registration.  It  should  be  remembered  that  each  registration  embraces 
only  the  goods  named  in  the  application,  and  in  a single  class  only.  An 
applicant  may,  at  his  option,  include  any  or  all  goods  in  such  class,  pro- 
vided that  the  mark  has  been  actually  used  upon  all  the  goods  specified. 

Registration  In  More  Than  One  Class. 

Where  a trade-mark  has  been  used  upon  goods  included  in  more  than 
one  class,  separate  applications  should  be  filed  for  each  such  class  to 
cover  the  goods  included  in  that  class. 

Series  of  Marks. 

Where  a manufacturer  or  trader  has  used  two  or  more  trade-marks 
upon  goods  embraced  in  a class,  separate  applications  are  required  for 
each  of  said  marks,  and  where  such  marks  have  been  used  upon  goods 
included  in  several  distinct  classes,  separate  applications  are  required  for 
each  mark  in  each  of  such  classes. 

Classes. 

1.  Raw  or  partly  prepared  materials. 

2.  Receptacles. 

3.  Baggage,  horse  equipments,  portfolios  and  pocketbooks. 

4.  Abrasive,  detergent,  and  polishing  materials. 

5.  Adhesives. 

6.  Chemicals,  medicines,  and  pharmaceutical  preparations. 

7.  Cordage. 

8.  Smokers’  articles,  not  including  tobacco  products. 

16 


9-  Explosives,  firearms,  equipments,  and  projectiles. 

10.  Fertilizers. 

11.  Inks  and  inking  materials. 

12.  Construction  materials. 

13.  Hardware  and  plumbing  and  steam-fitting  supplies. 

14.  Metals  and  metal  castings  and  forgings. 

15.  Oils  and  greases. 

16.  Paints  and  painters’  materials. 

17.  Tobacco  products. 

19.  Vehicles,  not  including  engines. 

20.  Linoleum  and  oiled  cloth. 

21.  Electrical  apparatus,  machines,  and  supplies. 

22.  Games,  toys,  and  sporting  goods. 

23.  Cutlery,  machinery,  and  tools,  and  parts  thereof. 

24.  Laundry  appliances  and  machines. 

25.  Locks  and  safes. 

26.  Measuring  and  scientific  appliances. 

27.  Horological  instruments. 

28.  Jewelry  and  precious-metal  ware. 

29.  Brooms,  brushes,  and  dusters. 

30.  Crockery,  earthenware,  and  porcelain. 

31.  Filters  and  refrigerators. 

32.  Furniture  and  upholstery. 

33.  Glassware. 

34.  Heating,  lighting  and  ventilating  apparatus,  not  including  electrical 

apparatus. 

35.  Belting,  hose,  machinery  packing,  and  nonmetallic  tires. 

36.  Musical  instruments  and  supplies. 

37.  Paper  and  stationery. 

38.  Prints  and  publications. 

39.  Clothing. 

40.  Fancy  goods,  furnishings,  and  notions. 

41.  Canes,  parasols,  and  umbrellas. 

42.  Knitted,  netted,  and  textile  fabrics. 

43.  Thread  and  yarn. 

44.  Dental,  medical,  and  surgical  appliances. 

45.  Beverages,  nonalcoholic. 

46.  Foods  and  ingredients  of  foods. 

47.  Wines. 

48.  Malt  extracts  and  liquors. 

49.  Distilled  alcoholic  liquors. 

50.  Merchandise  not  otherwise  classified. 

Note:  Class  18  was  abolished  February  24,  1909. 

17 


TRADE-MARKS  IN  FOREIGN  COUNTRIES. 
Comparison  of  Practice. 

At  the  outset  it  should  be  noted  that  a marked  difference  exists  be- 
tween the  practice  in  the  United  States  and  that  in  foreign  countries. 

In  the  United  States  adoption  and  use  of  a mark  is  necessary  before 
registration  can  be  effected.  In  foreign  countries,  almost  without  excep- 
tion, adoption  and  use  is  not  a prerequisite  to  registration. 

In  many  foreign  countries  registration  is  either  conclusive  of  owner- 
ship regardless  of  use,  or  becomes  conclusive  after  a short  time  from  the 
date  of  registration. 

Another  very  important  point  of  difference  should  be  noted.  The 
same  restrictions  as  to  descriptive  terms,  geographical  names  and  sur- 
names do  not  exist  in  many  countries,  and  in  many  other  countries  the 
laws  are  more  lenient  in  this  regard  than  those  in  the  United  States.  In 
countries  such  as  the  Argentine  Republic,  Chile,  Uruguay,  etc.,  such  marks 
are  frequently  registered,  and  become  very  valuable  for  trading  operations. 


Dangers  of  Failure  to  Register  Marks  Abroad. 

American  manufacturers,  traders,  and  exporters  of  merchandise  to 
foreign  countries  run  a very  real  and  grave  danger  if  they  fail  to  register 
and  protect  their  trade-marks  in  the  various  countries  in  which  their  goods 
are  sold. 

Goods  which  are  advertised,  or  become  popular  by  use  and  sale  in 
foreign  markets,  become  known  by  their  marks  or  names,  and  these  are 
quickly  imitated  or  counterfeited  if  the  rightful  owners  do  not  properly 
protect  them  by  registration. 

An  even  greater  danger  lies  in  the  liability  of  the  piracy  of  well- 
known  marks  by  unscrupulous  foreign  traders,  particularly  enemy  traders 
such  as  the  German  and  Austrian,  who,  especially  in  late  years,  have  not 
hesitated  to  use  and  register  in  their  own  names  valuable  marks  belonging 
to  American  and  other  manufacturers,  thereby  acquiring  the  property  in 
such  marks  in  the  foreign  countries  in  which  they  are  so  registered,  to  the 
exclusion  of  the  legitimate  owners,  who  are  thereby  prevented  from  using 
their  own  lawful  trade-marks  or  names  in  such  countries.  I have  treated 
this  subject  more  fully  under  “Piracy  of  Trade-Marks,”  below. 

If  an  owner  fails  or  neglects  to  protect  his  trade-marks  abroad  until 
the  happening  of  one  or  the  other  of  the  above  events,  he  is  face  to  face 
with  the  following  facts:  (a)  he  must  either  tamely  submit  to  the  flooding 
of  his  market  with  goods  which  are  often  very  inferior,  and  which  bear 
imitations  or  counterfeits  of  his  name  or  marks;  or,  (b)  in  countries 
where  registration  is  not  conclusive  of  ownership,  he  must  engage  in 

18 


costly  and  often  protracted  litigation  or  negotiations  to  establish  his 
ownership,  and  stop  the  imitation  or  counterfeiting;  or,  (c)  in  countries 
where  registration  is  conclusive  of  ownership,  he  must  either  cease 
using  his  own  marks,  or  be  liable  for  damages  for  use  thereof  by  the 
registrants,  or  acquire  the  right  to  the  use  thereof  by  negotiation  or  pur- 
chase, which  has  in  the  past,  in  many  cases,  been  a very  expensive  and 
vexatious  proceeding. 

PIRACY  OF  TRADE-MARKS. 

Owing  to  the  fact  that  in  many  countries  registration  is  conclusive 
of  ownership,  and  is  conclusive  in  other  countries  after  a limited  period  of 
time,  a practice  has  grown  up  among  unscrupulous  traders  which  may 
well  be  called  “piracy.” 

As  illustrative  of  this  fact  I publish  below  an  excerpt  from  the  Com- 
merce Reports  issued  by  the  Bureau  of  Foreign  and  Domestic  Commerce 
of  the  United  States  Department  of  Commerce. 

“The  Necessity  of  Trade-Mark  Registration  Abroad. 

The  apparent  increase  in  the  number  of  unauthorized  applica- 
tions for  the  registration  of  American  trade-marks  abroad  calls  for 
an  emphatic  reminder  of  the  necessity  of  early  registration  of  valu- 
able trade-marks,  especially  in  those  foreign  countries  where  the 
ownership  of  marks  is  based  upon  registration.  The  countries  of 
Latin  America  have  furnished  a particularly  profitable  field  for  the 
registration  of  trade-marks  for  speculative  purposes  as  most  of  those 
countries  grant  the  exclusive  right  to  use  a mark  to  the  first  appli- 
cant without  regard  to  its  prior  use  by  another.  Nearly  every  issue 
of  the  official  bulletins  of  some  Latin-American  countries  contains 
applications  for  trade-mark  registration  that  are  evidently  fraudulent 
or  at  least  unauthorized.  The  names  of  automobiles,  motor  trucks, 
pharmaceutical  preparations,  and  other  articles  the  sale  of  which 
depends  largely  upon  advertising  and  good  will  have  been  particu- 
larly subject  to  misappropriation,  and  recently  a single  firm  applied 
for  this  registration  of  the  trade-marks  of  six  among  the  best-known 
■ American  cars.  If  registration  had  been  granted,  it  would  have  been 
practically  equivalent  to  the  acquisition  of  an  exclusive  agency  for 
the  importation  of  each  of  these  six  cars  in  one  of  the  most  important 
foreign  markets  for  automobiles  unless  the  manufacturers  were  will- 
ing to  adopt  a new  trade-mark  for  that  particular  market. 

In  another  case  the  designation  “Ford  American  Products”  was 
sought  to  be  registered  in  a South  American  country  for  all  classes 
of  goods.  The  effect  of  this  registration  would  probably  have  been 

19 


to  give  to  the  local  registrant  absolute  control  over  the  use  of  the 
word  “Ford”  on  all  goods  sold  in  that  country.  This  latter  case  is 
illustrative  of  the  difficulties  that  may  arise  when  a trade-mark  used 
in  the  United  States  by  various  manufacturers  for  different  classes 
of  goods  is  registered  abroad  in  such  a way  as  to  cover  several  of 
these  classes.  Even  if  the  mark  is  registered  in  good  faith  by  one 
entitled  to  its  use,  the  form  of  registration  may  nevertheless  prevent 
the  use  of  the  mark  on  a distinct  kind  of  goods  by  another  manufac- 
turer except  with  the  consent  of  the  prior  registrant. 


Dangers  of  Registration  in  Name  of  Agent. 

A somewhat  different  but  none  the  less  embarrassing  situation 
may  be  presented  when  a mark  is  registered  in  the  name  of  the  local 
agent  of  the  American  manufacturer  or  exporter.  As  long  as  the 
exclusive  agency  continues  there  are  usually  no  difficulties,  but 
should  the  principal  desire  to  make  a change  in  the  agency  arrange- 
ments he  may  find  that  the  agent  has  it  in  his  power  to  prevent  the 
importation  of  the  trade-marked  goods  except  when  consigned  to 
him  or  under  such  terms  as  he  may  dictate.  This  danger  has  been 
further  emphasized  since  the  outbreak  of  the  war  by  the  experience 
of  some  exporters  with  agents  of  enemy  nationality.  The  placing  of 
the  name  of  the  agent  on  the  Enemy  Trading  List  has  resulted  in  a 
suspension  of  shipments  to  the  former  agent,  while  the  control  of 
the  trade-mark  through  registration  in  the  name  of  the  agent  has 
prevented  shipment  from  being  made  to  any  others  except  under 
a different  mark.  It  is  hoped  that  some  relief  from  this  difficulty 
may  be  obtained  through  a modification  of  the  procedure  for  the 
cancellation  of  unauthorized  registrations,  but  in  the  meantime  no 
shipments  of  the  trade-marked  goods  can  be  made  to  countries  where 
firms  of  enemy  nationality  control  the  trade-mark. 

The  applications  for  trade-mark  registration  published  in  the 
official  gazettes  of  the  countries  where  the  most  difficulties  have  been 
experienced  are  examined  regularly  in  the  Bureau  of  Eoreign  and 
Domestic  Commerce  in  order,  so  far  as  possible,  to  discover  unau- 
thorized attempts  to  appropriate  American  trade-marks,  and  the 
interested  persons  are  notified.  Several  hundred  of  such  notices 
have  been  sent  out  in  recent  months,  and  in  some  cases  the  rightful 
owners  have  been  enabled  to  prevent  the  loss  of  their  marks.  It  is 
impossible,  however,  to  identify  many  of  the  marks  examined,  and 
frequently  the  owner  of  the  mark  can  not  be  located.  The  time  that 
necessarily  elapses  before  the  publications  are  received  from  the 
more  remote  countries  like  Argentina  is  often  sufficient  for  the 

20 


local  applicant  to  complete  registration  before  any  opposition  can 
be  brought. 

The  only  safe  course  to  follow  is  to  register  trade-marks  promptly 
in  the  name  of  the  manufacturer  in  countries  where  any  considerable 
business  is  carried  on  or  anticipated.  Even  if  exportation  at  the  present 
time  is  limited  by  war  conditions,  the  registration  of  the  mark  abroad 
may  well  be  regarded  as  one  of  the  fundamental  steps  of  preparation  for 
trade  after  the  war.  It  is  perhaps  of  even  greater  importance  now  than 
under  normal  conditions  in  view  of  the  reported  activity  of  enemy 
agents  and  others  appropriating  American  trade-marks.  The  expense 
of  registration  usually  represents  only  a reasonable  outlay  for  the  pro- 
tection of  good  will,  and  it  is  suggested  that  any  article  which  is  worth 
advertising  abroad  is  worth  protecting  by  means  of  trade-mark  regis- 
tration. * * * Unless  a company  is  represented  abroad  by  agents  of 
unquestionable  competency  it  is  generally  preferable  to  have  the  entire 
business  handled  by  an  experienced  attorney  in  the  United  States  who 
has  connections  in  foreign  countries  . * * *” 

Excerpts  from  other  publications  referring  to  this  extremely  impor- 
tant matter  follow  on  pages  31  and  32. 

Importance  of  Registering  Mark  Exactly  as  Used. 

In  a number  of  foreign  countries  the  courts  have  distinguished  be- 
tween a registered  mark  and  an  imitation  thereof  because  of  the  fact  that 
the  mark  as  actually  used  upon  the  packages  was  not  the  same  as  the 
mark  actually  registered,  and  because  the  imitation  presented  distinguish- 
ing characteristics  not  found  in  one  or  both  of  the  others,  and  unscrupu- 
lous traders  taking  advantage  of  this  condition  have  been  able  to  escape 
the  penalties  which  would  arise  under  the  laws  of  other  countries. 

This  has  been  particularly  true  with  respect  to  the  South  American 
countries.  Efforts  are  being  made  to  secure  the  correction  of  this  evil,  but 
so  far  without  pronounced  success. 

Manufacturers  and  traders  should  therefore  see  to  it  that  their  marks 
as  actually  used  by  them  are  placed  upon  the  register. 

Registration  by  Classes. 

It  is  desirable  for  foreign  registrations,  where  the  same  are  not  based 
upon  the  United  States  registration,  that  the  same  should  be  effected  upon 
as  wide  a statement  of  goods,  included  within  one  general  class,  as  pos- 
sible, so  that  even  while  owners  may  not  be  able  to  sue  for  infringement, 
if  the  mark  is  used  on  goods  not  of  the  same  general  description  as  those 
in  which  they  are  for  the  time  trading,  their  broad  registration  acts  to 


21 


prevent  competitors  from  securing  the  registration  of  a similar  mark  in 
that  class  on  the  same  or  similar  goods,  and  thus  leaves  the  ground  open 
for  the  owner’s  legitimate  trade  expansions. 

Moreover,  this  course  saves  the  expense  of  constantly  registering  the 
mark  for  additional  goods  in  such  class. 

This  is  of  particular  advantage  to  owners  who  are  continually  in- 
creasing their  lines  of  trade,  for  as  their  trade  expands  with  the  addition 
of  new  articles,  which  require  separate  registrations  at  home  to  fully 
protect  the  mark  as  applied  thereto,  their  foreign  registrations,  if  properly 
drawn,  have  covered  the  new  articles  m advance. 

Renewals  of  Registration. 

These  can  generally  be  obtained  for  successive  terms  indefinitely. 
Except  as  indicated  in  the  notes  following  the  “Schedule  of  Charges” 
such  renewals  are  granted  for  the  same  terms  as  the  original  registrations, 
after  the  same  procedure  by  application,  and  at  the  same  costs. 

Countries  Having  Trade-Mark  Treaties  With  the  United 

States. 

The  following  countries  have  entered  into  treaties  or  conventions 
with  the  United  States  for  the  reciprocal  registration  and  protection  of 
trade-marks : Austria-Hungary , Belgium,  Denmark,  France,  Germany, 
Great  Britain,  Italy,  Japan,  Roumania,  Russia,  Servia,  Spain. 

The  United  States  is  also  a member  of  the  International  Union  for 
the  Protection  of  Industrial  Property,  of  which  twenty-nine  countries 
are  members,  and  of  the  Pan-American  Convention,  particulars  as  to 
which  will  be  found  in  the  following  pages. 

The  fact  must  be  emphasized,  however,  that  the  “treaties  or  conven- 
tions” above  specified,  so  far  as  citizens  of  the  United  States  are  con- 
cerned, only  give  them  the  right  to  apply  for  and  obtain  protection  of 
their  trade-marks  in  the  respective  treaty  countries,  a separate  application 
being  required  in  each  country. 

The  International  Union  gives  a four  months’  right  of  priority  for 
filing  separate  applications  in  the  other  member  countries,  to  the  owners 
of  trade-marks  who  have  regularly  applied  for  registration  thereof  in  the 
United  States,  this  priority  commencing  from  the  filing  date  of  the  U.  S. 
application. 


22 


Table  Showing  Countries  Where  Registration  is  Conclusive 
of  Ownership,  and  Countries  Requiring  Proof  of  Regis- 
tration in  Home  Country  as  a Prerequisite  to  Registra- 
tion There. 


Registration 
Conclusive  of 
Ownership 

Conclusive 
after  Limited 
Time 

Require  Proof  of 
Registration  in 
Home  Country 

No  Proof  Required 

Argentine  Republic 

Australia 

Austria 

Argentine  Republic 

Japan  (and  Korea) 

Bolivia 

Brazil 

Bulgaria 

Australia 

Leeward  Is. 

Chili 

Bulgaria 

Cuba 

Bahama  Is. 

Liberia 

Costa  Rica 

Denmark 

Denmark 

Barbadoes 

Luxembourg 

Cuba 

Great  Britain 

Finland 

Belgian  Congo 

Malta  (and  Gozo) 

Germany 

Mexico 

Germany 

Belgium 

Mauritius 

Guatemala 

Rhodesia 

(and  Colonies) 

Bermuda 

Mexico 

Nicaragua 

Russia 

Greece 

Bolivia 

Morocco 

Norway 

Salvador 

(including  Crete) 

Brazil 

Newfoundland 

Paraguay 

Spain 

Guatemala 

(but  increased  cost.)  New  Zealand 

Peru 

Uruguay 

Haiti 

British  Guiana 

Nicaragua 

Portugal 

Honduras 

British  Honduras 

Nigeria 

San  Domingo 

Hungary 

British  North  Borneo 

(including  Lagos) 

Servia 

Manchuria 

Burmah 

Nyasaland 

Sweden 

Norway 

Canada 

Paraguay 

Turkey 

Panama 

Ceylon 

Peru 

Venezuela 

Portugal 

Channel  Is. 

Philippine  Is. 

(and  Colonies) 

(Guernsey,  Jersey)  Porto  Rico 

Russia 

Chili 

Rhodesia 

Servia 

China 

(Southern) 

Spain 

Colombia 

Roumania 

Sweden 

Costa  Rica 

St.  Lucia 

Switzerland 

Curagao 

St.  Vincent 

Cyprus 

Salvador 

Dutch  East  Indies 

San  Domingo 

East  African 

Seychelles  Is. 

Protectorate 

Spain 

Ecuador 

Sierra  Leone 

Egypt 

South  Africa 

! 

Eritrea 

(Union) 

Falkland  Is. 

Straits  Settlements 

Federated  Malay 

Surinam 

i 

States 

(Dutch  Guiana) 

Fiji  Is. 

Trinidad 

I 

France 

(and  Tobago) 

(and  Colonies) 

Tunis 

Gambia  (British) 

Turkey 

Gibraltar 

Uruguay 

Gold  Coast  Colony 

(special) 

Great  Britain 

Venezuela 

Grenada 

Virgin  Is. 

Holland 

Zanzibar 

23 


I 


TRADE-MARK  CONVENTIONS. 

The  Berne  Trade-Mark  Convention. 

The  following  thirteen  countries  are  members  of  this  Convention,  viz. ; 
Austria,  Belgium,  Brazil,  Cuba,  France,  Holland,  Hungary,  Italy,  Mexico, 
Portugal,  Spain,  Switzerland,  Tunis. 

The  United  States  is  not  a member,  and  no  advantage  can  be  taken 
of  the  Convention  by  American  citizens  or  corporations,  nor  even  by 
branches  of  American  business  houses  in  such  countries.  Nor  can  inter- 
national registrations  effected  under  the  Convention  be  assigned  to  citizens 
or  corporations  of  non-member  countries. 

This  Convention  provides  that  upon  payment  of  a single  fee  of  $20 
to  the  Central  Bureau  at  Berne,  the  rights  acquired  by  a registration  ob- 
tained in  one  of  the  countries  of  the  Convention  are  extended  to  cover 
the  remainder  of  the  countries  belonging  to  the  Convention. 

It  should  be  pointed  out  in  this  connection  that  American  manufac- 
turers and  traders  who  have  not  registered  their  marks  in  these  countries 
are  exposed  to  the  danger  of  having  their  marks  appropriated  by  trade- 
mark pirates  and  registered  in  these  countries  under  the  Convention,  so 
that  the  rightful  owners  may  find  that  they  are  debarred  from  the  use  of 
their  own  marks  there,  their  goods  being  liable  in  such  case  to  confiscation 
on  arrival  at  ports  of  entry  in  these  countries,  while  they  may  be  con- 
demned to  pay  damages  for  infringement  of  their  own  marks,  which  will 
be  owned  by  enemy  rivals  in  such  countries.  The  only  remedy  is  by 
prompt  registration  of  all  useful  marks  before  trade  rivals  have  an  op- 
portunity of  misappropriating  them. 

The  International  Union  for  the  Protection  of  Industrial 

Property. 

The  following  twenty-nine  countries  are  members  of  this  Union,  viz. ; 
Australia,  Austria,  Belgium,  Brazil,  Ceylon,  Cuba,  Curacao,  Denmark  and 
Faroe  Islands,  Dutch  East  Indies,  France  and  Colonies,  Germany  and 
Colonies,  Great  Britain,  Holland,  Hungary,  Italy,  Japan  and  Korea, 
Mexico,  New  Zealand,  Norway,  Portugal,  San  Domingo,  Servia,  Spain 
and  Colonies,  Surinam,  Sweden,  Switzerland,  Trinidad  and  Tobago, 
Tunis,  United  States. 

Registration  in  one  of  the  countries  belonging  to  the  Union  does  not 
have  the  effect  of  affording  protection  in  the  other  countries  of  the  Union 
without  separate  registration  in  each  country.  It  is  provided,  however, 
that  an  owner  who  has  regularly  filed  his  application  for  registration  in 
his  own  country  enjoys  a period  of  priority  of  four  months  from  the  date 
of  such  application,  for  filing  his  application  for  registration  in  the  other 
Union  countries. 


24 


Pan-American  Convention. 


This  Convention  has  been  ratified  by  the  United  States  and  the  fol- 
lowing countries:  Costa  Rica,  Cuba,  Guatemala,  Honduras,  Nicaragua, 
Panama,  and  a Central  Bureau  for  registrations,  and  the  transaction  of 
necessary  business  in  connection  therewith,  is  being  organized  in  Havana, 
where  it  will  be  located. 

It  is,  however,  impossible  to  fix  a date  when  the  Bureau  will  be 
ready  for  business,  as  the  necessary  funds  for  its  operation  will  only  be 
provided  after  appropriation  of  their  proportionate  shares  by  the  legis- 
latures of  the  dififerent  countries,  and  so  far  this  has  not  been  done. 

This  Convention  has  not  been  ratified  by,  and  will  not  apply  to  : 
Mexico,  Hayti,  San  Salvador,  so  that  even  after  the  Convention  becomes 
operative,  separate  registrations  will  be  required  in  these  countries. 

A Bureau  is  proposed  to  be  established  at  Rio  de  Janeiro  to  cover 
the  Southern  group  of  republics,  but  the  Convention  has  not  been  ratified 
as  yet  by  a sufficient  number  of  the  Southern  countries  to  bring  it  into 
operation.  It  will  probably  be  some  time  before  this  is  done,  and  a still 
longer  time  will  probably  elapse  before  the  Bureau  is  in  working  condition. 

While  the  purpose  of  the  Convention  is,  of  course,  to  provide  a 
simple  and  inexpensive  method  of  effecting  the  registration  of  marks  at 
the  Central  Bureaus,  such  registrations  to  be  effective  in  all  the  countries 
adhering  to  the  Convention,  it  is  impossible  at  this  time  to  say  how  far  it 
will  be  safe  to  rely  on  such  international  registrations,  and  in  the  absence 
of  decisions  upon  the  point,  and  upon  the  point  of  infringement,  to  deter- 
mine what  measure  of  protection  will  be  afforded  thereby. 

In  any  case,  until  the  Southern  republics,  which  up  to  now  have  been 
the  principal  piratical  field  for  unscrupulous  traders,  have  ratified  and 
become  bound  by  the  Convention,  it  is  most  essential  for  manufacturers 
and  traders  to  register  their  marks  under  the  laws  of  each  of  these  coun- 
tries separately. 


SCHEDULE  OF  CHARGES. 

Foreign  Registrations. 

The  charges  named  below  cover  the  usual  inclusive  cost  of  making 
application  for  the  registration  of  trade-marks  in  the  countries  named, 
but  are  necessarily  subject  to  change  without  notice,  as  there  are  frequent 
changes  in  governmental  fees,  stamp  duties,  and  other  costs. 

AlP  charges  are  payable  as  follows:  One-half  thereof  on  giving  the 
order;  the  remaining  one-half  when  the  applications  are  in  readiness  for 
transmission  for  filing. 

Clients  are  expected  to  provide  the  electrotypes  and  copies  of  the 
mark  required  for  filing,  as  well  as  copies  of  the  latter  for  the  filing 

25 


agent’s  use  in  each  country.  Electrotypes  should  not  measure  more  than 
i]/s  inches  in  either  length  or  width,  and  should  be  blocked  on  wood, 
otherwise  extra  costs  are  incurred  for  which  I must  charge. 

The  charges  include  preparation  of  all  documents;  legalization  of  all 
powers  of  attorney  where  necessary;  procurement  of  certified  copies  of 
U.  S.  registration,  authentication  of  same  at  Interior  and  State  Depart- 
ments and  subsequent  legalization  of  same;  making  drawings,  when  re- 
quired ; payment  of  government  filing,  registration  and  stamp  fees ; and 
attorney’s  fees  for  prosecuting  the  application  and  obtaining  registration 
in  uncontested  cases. 

The  charges  do  not  include  special  services  in  contested  cases  for 
translations,  arguments,  amendments,  oppositions,  appeals  and  like  special 
actions,  the  charges  for  which  cannot  be  determined  in  advance,  but  which 
will  be  fair  and  reasonable  for  the  services  rendered. 

Notes  : In  the  following  schedule  the  figures  following  the  names  of 
countries  refer  to  the  notes  following  the  schedule,  to  which  reference 
should  be  made  to  understand  the  special  practice  in  such  countries. 


COUNTRY 

Charge 

Term 

Years 

Copies  of 
Mark 
Needed 

Electro- 

types 

Required 

North  America 

Canada  (Specific)  (i) 

$45.00 

24 

5 

None 

Canada  (General)  (i) 

55.00 

Unlimited 

5 

None 

Mexico  (2)  

37.50 

20 

15 

I 

Newfoundland  

50.00 

Unlimited 

5 

None 

Europe 

Austria  

35.00 

10 

10 

I 

Austria  and  Hungary 

50.00 

10 

20 

2 

Belgium  

Unlimited 

6 

I 

Bulgaria  

73.50 

10 

5 

I 

Channel  Is. — Guernsey  

37.00 

14 

6 

None 

Channel  Is. — ^Jersey 

37.00 

14 

6 

None 

Denmark  

10 

4 

2 

Finland 

38.00 

10 

5 

2 

France  and  Colonies 

3400 

15 

6 

I 

Germany  and  Colonies  

45.00 

10 

20 

I 

Gibraltar  (Adv.)  

60.00 

10 

4 

I 

Great  Britain 

30.00 

14 

6 

I 

Greece  (and  Crete) 

70.00 

10 

6 

I 

Holland  

50.00 

20 

6 

I 

Hungary  

10 

10 

I 

Hungary  and  Austria 

50.00 

10 

20 

2 

Italy  

50.00 

Unlimited 

6 

I 

Luxemburg  

10 

6 

I 

Malta  and  Gozo 

42.00 

14 

6 

I 

Norway  

50.00 

10 

10 

I 

Portugal  

36.00 

10 

12 

I 

Roumania  (3)  

45.00 

26 

15 

10 

None 

COUNTRY 

Russia  

Servia  

Spain  and  Colonics  (4) 

Sweden  

Switzerland  

Turkey  

South  America 

Argentine 

Bolivia 

Brazil,  on  U.  S.  Reg’n.  (5) 

Brazil,  no  U.  S.  Reg’n.  (5) 

British  Guiana  

Chile  (21)  

Colombia  

Ecuador  

Falkland  Is 

Panama 

Paraguay  

Peru  (6)  

Surinam  (Dutch  Guiana) 

Uruguay  

Venezuela  (7)  

Central  America 

British  Honduras  (Adv.) 

Costa  Rica  (8) 

Guatemala  (9)  

Honduras  (10)  

Nicaragua 

Salvador  (ii)  

West  Indies 

Bahamas 

Barbados  (12)  

Bermuda  

Cuba 

Curagao  (Dutch  W.  I.) 

Grenada  (Adv.)  

Haiti 

Jamaica  

Leeward  Is 

Porto  Rico  (Registration)  

Porto  Rico  (filing  copy  U.  S.)  (13) ... . 

St.  Lucia  (Adv.) 

St.  Vincent  (Adv.) 

Trinidad  and  Tobago 

Virgin  Is 

Australasia 

Australian  Commonwealth 

Fiji  Is 

New  Zealand 


Term 

Copies  of 
Mark 

Electro- 

types 

Charge 

Years 

Needed 

Required 

$65.00 

10 

60 

I 

105.00 

10 

6 

I 

55-00 

20 

20 

I 

65.00 

10 

6 

2 

43.00 

20 

5 

I 

105.00 

15 

5 

None 

65.00 

10 

8 

I 

75.00 

10 

6 

I 

72.00 

15 

6 

None 

120.00 

15 

6 

None 

50.00 

14 

6 

I 

55-00 

10 

6 

None 

100.00 

20 

16 

I 

80.00 

20 

26 

I 

65.00  ■ 

14 

10 

I 

100.00 

10 

6 

I 

68.00 

10 

5 

I 

62.00 

10 

12 

I 

41.00 

20 

6 

I 

84.00 

10 

5 

I 

5500 

30 

6 

I 

52.00 

10 

6 

I 

58.00 

15 

6 

I 

65.00 

10 

6 

I 

85.00 

Unlimited 

10 

I 

65.00 

10 

10 

I 

75.00 

20 

25 

48.00 

14 

6 

I 

42.00 

Unlimited 

6 

I 

48.00 

14 

5 

I 

55.00 

15 

30 

I 

53.00 

20 

6 

I 

45-00 

10 

6 

I 

35.00 

Indefinite 

5 

None 

60.00 

14 

15 

I 

50.00 

14 

10 

I 

41.00 

20 

8 

None 

25.00 

20 

None 

None 

47.00 

10 

4 

I 

47.00 

10 

4 

I 

60.00 

14 

4 

I 

43.00 

U.  S.  Term 

10 

I 

50.00 

14 

25 

I 

62.00 

7 

6 

I 

40.00 

14 

6 

I 

27 


COUNTRY 

Asia 

British  North  Borneo 

Burmah  

Ceylon  

China  (Shanghai)  (14) 

China  (Tientsin)  (14) 

Cyprus  

Dutch  East  Indies  

Federated  Malay  States  (Adv.)  (15).. 

Hong  Kong 

India  (British)  (16) 

India  (Upper)  (17) 

Japan  and  Korea 

Manchuria  

Philippine  Is.  (Registration) 

Philippine  Is.  (Deposit)  (18) 

Portuguese  Colonies  (19)  

Macao 

Portuguese  India 

Timor  

Siam 

Straits  Settlements  

Africa 

Belgian  Congo  

East  Africa  Protectorate 

Egypt  A Registration  (20) 

Egypt  B Registration  (20) 

Egypt  C Registration  (20) 

Eritrea 

Gambia,  British  

Gold  Coast  Colony  and  Ashanti 

Liberia 

Mauritius 

Nigeria,  Southern,  and  Lagos 

Nyasaland,  British 

Portuguese  Colonies  (19) 

Angola 

Cape  Verde 

Guinea  

St.  Thomas  and  Prince  Is 

East  Coast,  Government  Territory... 
East  Coast,  Nyasa  Co.’s  Territory... 
East  Coast,  Mosambique  Co.’s  Terr... 

Rhodesia,  Southern  

Seychelles  Is 

Sierra  Leone  (Adv.)  

South  Africa  (Union)  

Zanzibar 


Charge 

Term 

Years 

Copies  of 
Mark 
Needed 

Electro- 

types 

Required 

$67.00 

Unlimited 

6 

I 

41.00 

Unlimited 

5 

None 

57.00 

14 

6 

I 

. 30.00 

Unlimited 

10 

None 

35.00 

Unlimited 

10 

None 

67.00 

14 

10 

I 

45.00 

20 

6 

I 

57.00 

10 

10 

I 

100.00 

14 

6 

I 

37-00 

Unlimited 

5 

None 

37.00 

Unlimited 

5 

None 

48.00 

20 

8 

I 

48.00 

Unlimited 

5 

I 

52.00 

30 

10 

None 

26.00 

20 

None 

None 

36.00 

10 

None 

None 

36.00 

10  ' 

None 

None 

36.00 

10 

None 

None 

65.00 

12 

12 

None 

53.00 

14 

6 

I 

40.00 

Unlimited 

6 

I 

43.00 

14 

6 

None 

36.00 

10 

5 

I 

60.00 

10 

10 

2 

82.00 

10 

15 

3 

55.00 

Unlimited 

6 

I 

54.00 

14 

6 

I 

55.00 

14 

6 

I 

62.00 

14 

6 

I 

49.00 

Unlimited 

5 

I 

62.00 

14 

5 

I 

47.00 

14 

6 

I 

36.00 

10 

None 

None 

36.00 

10 

None 

None 

36.00 

10 

None 

None 

36.00 

10 

None 

None 

36.00 

10 

None 

None 

36.00 

10 

None 

None 

36.00 

10 

None 

None 

67.00 

14 

6 

I 

46.00 

14 

6 

I 

61.00 

10 

6 

I 

57.50 

14 

10 

I 

70.00 

14 

6 

I 

28 


Notes. 

(Adv.)  In  a luiinbcr  of  countries  there  is  no  provision  for  registra- 
tion, but  the  laws  provide  penalties  for  false  marking.  It  is  usual  in  these 
countries  to  establish  evidence  of  ownership,  and  to  warn  the  public 
against  imitating  by  advertising  the  mark  in  the  official  or  other  local 
papers. 

1.  Canada.  A Specific  mark  is  one  used  upon  specified  goods  in  a single 
class ; a General  mark  is  one  that  is  used  by  the  owner  for  all  trade 
purposes. 

2.  Mexico.  Marks  used  by  merchants  must  contain  the  notice  “Marca 
de  Comercio,  Registrada,”  or  the  abbreviation  “M.  de  C.,  Rgtrda” 
and  the  number  and  date  of  registration.  Marks  used  by  manufac- 
turers, traders,  etc.,  must  contain  the  notice  “Marca  Industrial  Regis- 
trada,”  or  the  abbreviation  “M.  Ind.  Rgtrda”  and  the  number  and 
date  of  registration.  If  a mark  consists  of  or  contains  words  or 
letters,  it  must  include  as  a conspicuous  feature  the  name  of  the 
owner  and  the  place  where  his  establishment  is  located. 

3.  Rournania.  Foreigners  may  effect  registration  only  when  they  are 
citizens  of  countries  having  treaty  relations  with  Rournania  on  the 
subject.  The  United  States  has  such  treaty  relations. 

4.  Spain.  Taxes  are  payable  every  five  years.  My  charge  for  effecting 
such  payments  is:  fifth  year,  $10.00;  tenth  year,  $12.50;  fifteenth 
year,  $15.00. 

5.  Braced.  The  smaller  charge  applies  when  the  mark  has  been  regis- 
tered in  the  home  country  and  a copy  of  the  certificate  of  registration 
is  filed  with  the  application ; the  larger  charge  applies  when  an  inde- 
pendent application  is  made  without  reference  to  a prior  registration. 
When  the  certified  copy  of  the  home  registration  and  the  certificates 
attached  thereto  exceed  500  words,  a charge  of  $3.00  per  100  words  is 
made  for  additional  translation  and  publication. 

6.  Peru.  Firms  and  corporations  are  required  to  furnish  evidence  of 
their  legal  existence. 

7.  Venezuela.  While  the  term  of  registration  is  thirty  years,  the  pro- 
tection ceases  at  the  end  of  the  term  of  the  prior  registration  in  the 
home  country. 

8.  Costa  Rica.  Successive  renewals  may  be  made  for  ten  years  each. 

9.  Guatemala.  Registration  is  granted  to  foreigners  only  when  they  are 
citizens  of  countries  having  treaty  relations  with  Guatemala  upon  the 
subject.  The  United  States  has  such  treaty  relations.  Guatemala  is 
also  a member  of  the  Pan-American  Convention. 

10.  Honduras.  Applicant  must  have,  or  appoint,  a local  agent  for  the 
sale  of  his  goods. 


29 


11.  Salvador.  Under  a recent  decree,  taxes  are  now  payable  for  each 
year  of  the  duration.  The  charge  named  includes  the  taxes  for  the 
first  five  years.  My  charge  is  $5.00  per  year  for  effecting  payment 
of  each  year’s  tax  thereafter. 

12.  Barbados.  To  obtain  protection  for  a mark  registered  in  a country 
adhering  to  the  International  Union,  it  is  sufficient  to  advertise  such 
registration  in  Barbados ; otherwise  the  mark  must  be  registered 
there.  The  cost  is  the  same  in  either  case. 

13.  Porto  Rico.  Protection  may  be  obtained  in  two  ways:  (a)  by  in- 
dependent registration;  or,  (b)  by  filing  a certified  copy  of  the  U.  S. 
certificate  of  registration. 

14.  China.  Marks  may  either  be  registered  at  the  Consulate  and  Customs 
Bureau  at  Shanghai,  or  the  Consulate  and  Customs  Bureau  at  Tien- 
tsin, or  at  both  places,  as  desired. 

15.  Federated  Malay  States.  These  include  Negri  Sembilan,  Pahang, 
Perak,  and  Selangor. 

16.  India.  No  registration  act  is  in  force,  but  an  act  exists  for  the 
punishment  of  false  marking,  and  it  is  the  practice  to  record  marks 
in  the  Office  for  the  Registration  of  Deeds. 

17.  India  (Upper).  No  registration  law  exists,  but  the  Chamber  of  Com- 
merce has  established  an  unofficial  register. 

18.  Philippine  Islands.  Protection  may  either  be  secured  by  an  inde- 
pendent registration  or  by  the  deposit  of  a copy  of  an  U.  S.  certificate 
of  registration. 

19.  Portuguese  Colonies.  Registration  must  first  be  effected  in  Portugal, 
and  protection  thereafter  extended  to  the  desired  Colony  or  Colonies. 

20.  Egypt.  Registration  may  be  made  at  the  Courts  either  of  (a)  Cairo, 
Alexandria  or  Mansurah,  or  at  the  Courts  of  (b)  two,  or  (c)  all  of 
said  places. 

21.  Chili.  To  manufacturer’s  marks  should  be  added  the  initials  “M.  de 
F.,”  and  to  all  commercial  marks  ‘‘M.  C.,”  as  notice  of  registration. 


30 


(Evening  Telegram,  June,  1918.) 


LEADERS  UNITE  AGAINST  PIRATES 
OF  TRADE-MARKS 


Latin-American  Countries  Interested  in  Protecting  American 

Trade  After  War 


To  Prevent  Any  Fraudulent  Registration,  United  States  Aim 


Washington,  Saturday. — The  coming  of  Dr.  Mario  Diaz  Irizar,  of  Cuba,  to 
the  United  States  for  conference  with  business  men  and  other  officials  of  the  Pan- 
American  Trade-Mark  Bureau  of  which  Dr.  Irizar  is  director  in  North  America,  is 
expected  to  result  in  greatly  furthering  the  protection  of  manufacturers  who  are 
endeavoring  to  increase  their  export  trade  in  Latin-American  countries. 

The  matter  of  trade-marked  articles  in  Latin  America  has  caused  great  trouble 
to  business  men,  and  has  long  offered  a wide  field  for  unscrupulous  adventurers 
and  notably  for  Germans,  some  of  whom  have  secured  large  amounts  of  money 
from  American  manufacturers  by  methods  closely  resembling  blackmail.  Patents 
and  copyrights  come  under  the  same  head,  and  efforts  are  being  made  by  the  Pan- 
American  Trade-Mark  Bureau  to  correct  the  evils  that  have  grown  up  in  pirating 
the  good  names  of  reliable  manufactured  articles. 

Denounces  Pirates. 

The  purpose  of  the  pirates  is  never  to  manufacture,  according  to  William  C. 
Wells,  chief  statistician  of  the  Pan-American  Union. 

“They  simply  register  the  trade-mark,”  he  said  to-day,  “and  thereafter  control 
the  selling  of  the  article  in  the  country  in  which  they  have  registered  it.  That  is 
all  that  is  necessary  under  the  laws  of  all  the  Latin-American  countries. 

“The  object  of  the  Pan-American  Trade-Mark  Bureau  is  to  prevent  this 
fraudulent  registration.  All  the  countries  of  both  Americas  are  interested  in  the 
bureau,  which  has  branches  in  North  and  South  America.  The  modus  operandi  of 
' the  man  who  registers  trade-marks  is  simple.  All  he  has  to  do  is  to  find  some 
article  that  is  being  advertised  extensively  in  the  United  States  and  of  which  there 
is  a probability  that  it  will  be  introduced  in  his  country. 

Trickster  Gets  Royalty. 

“The  registration  fee  is  usually  small,  and  when  the  trickster  has  made  his 
registration  he  sits  back  and  waits  for  the  business  to  come  to  him.  When  the 
manufacturer  comes  to  introduce  his  article  in  that  country  he  finds  that  he  has 
to  deal  with  the  man  who  registered  it.  Sometimes  he  has  to  pay  a big  royalty  or  a 
large  lump  sum  to  be  permitted  to  operate  there. 

“It  is  to  correct  this  state  of  affairs  that  the  bureau  was  organized.” 

It  was  said  by  an  official  in  Washington  that  a United  States  manufacturer 
can  easily  circumvent  the  trade-mark  pirates  by  changing  the  trade-mark  when  he 

31 


is  ready  to  introduce  the  article  in  any  country  where  it  has  been  fraudulently 
registered. 

“But  these  manufacturers  are  loath  to  do  this,”  said  the  official.  “They  think 
that  the  trade-mark  is  the  valuable  thing  about  the  article.  They  are  also  sentimen- 
tal about  it.  As  a matter  of  fact  the  trade-mark  is  frequently  a drawback  instead 
of  an  advantage.  English  words  used  in  trade-marks  are  often  unpronounceable 
in  Spanish,  and  the  consumer  has  to  make  known  his  wants  by  signs  or  nicknames. 
If  the  manufacturer  would  change  his  trade-mark  so  that  the  Latin- American  could 
pronounce  it,  he  would  circumvent  the  pirates  and  popularize  his  article.  And  the 
intrinsic  value  of  the  goods  would  establish  the  market  for  the  manufacturers.” 


SPECIAL. 

I make  a practice  of  advising  my  correspondents  regard- 
ing important  developments  and  changes  in  the  law  and 
practice  in  the  United  States  and  foreign  countries  with 
reference  to  patents  and  trade-marks. 

I make  no  charge  for  this  service. 

I will  be  glad  to  add  your  name  to  my  mailing  list  if  you 
care  to  have  this  information. 

WILLIAM  E.  RICHARDS, 

Attorney  and  Counsellor  at  Law, 

277  Broadway, 

New  York. 


